NAPP eNews™/JULY/2017 |
NAPP eNews™ for July 2017 Dear NAPP Members and followers, I hope this find you well, and your practices are thriving. If you are reading this as a new member, or are simply new to the patent profession, my goal is to provide updates on current patent issues important to patent practitioners. 2017 Annual Meeting and Conference in San Jose, July 27-29 Our early registration period has now lapsed; however, there is still time to register! For those that have already registered, we thank you. For those still on the fence, we believe we have a great program scheduled, and your practice will benefit. But the programming is secondary, in my estimation, to the personal contacts new and renewed. Thanks once again to Lisa Adelson and her Committee (now a sub-committee of the new Professional Development Committee) for their work thus far, and to Dan Krueger and members of the Marketing Committee for getting the word out. If you have non-member or former member friends, we offer a 1-day option for $295. This is meant for new practitioners to try-out NAPP, and for former members to renew interest in NAPP. This includes all meals and social activities held that day. Member students and faculty members pay $75 for the full conference, while non-member students and faculty may register for $95. For full details, including hotel, airports, cancellation policy, and more, click here: http://www.napp.org/AMCSanJose. The Marriott block is full but we are negotiating with Marriott to open more rooms at the block rate, and investigating other hotels in San Jose and beyond. For those that prefer something a little different than the name brand hotels, the USPTO Regional Director, John Cabeca, has suggested the Hotel Clariana right next door to the USPTO. Board Elections Please remember to vote in our Board elections. Visit www.napp.org/candidate2017 for details on candidates. If you cannot attend the Annual Meeting & Conference in San Jose this year, you can use the proxy voting system. CAFC: Even groundbreaking discoveries can fall short of statutorily patentable subject matter As reported by Warren Woessner on JDSUPRA.com, the CAFC has held that a patent claiming a correlation between a blood constituent and cardiovascular disease is not patent eligible under Section 101. In Cleveland Clinic Foundation v. True Health Diagnostics, Appeal no. 2016-1766 (Fed. Cir., June 16, 2017) a Fed. Cir. panel of Judges Lourie, Reyna and Wallach (Reyna writing) held that claims to a method of assessing a test subject’s risk of having atherosclerotic cardiovascular disease by comparing the levels of myeloperoxidase (MPO) in a sample from the test subject with predetermined levels of control subjects was unpatentable under Section 101. Does not the US Constitution, Art. I, Section 8, Clause 8 grant Congress the power "To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries?" Recent Congressional Hearings on Patent Issues On June 13, the United States House of Representatives Committee on Judiciary, Subcommittee on Courts, Intellectual Property, and the Internet, chaired by Rep. Issa, R-CA, held discussions supposedly on the affect of the recent SCOTUS decision TC Heartland regarding proper venue for patent infringement cases. However, as pointed out by Steve Brachmann writing on IP Watchdog®, the discussion was mainly about the supposed scourge of “patent trolls”, and what further amendments to patent laws could be made to reduce this supposed problem. I encourage readers of this newsletter to read Bachmann’s commentary. Professor Adam Mossoff (George Mason University, Antonin Scalia Law School), who spoke at last year’s NAPP AMC, noted that as used by many testifying before the subcommittee, the phrase “patent troll” “includes individuals, startups, universities and licensing operations. Licensing has been a key component of what has been the success of the U.S. patent system in driving our innovation economy for well over 200 years,” he said. Mossoff noted that one important point was that there are no actual rigorous studies following standardized norms providing statistical analysis to conclude that there has been widespread abusive litigation. He also pointed out that the current “troll” definition would apply to famed American inventors like Thomas Alva Edison and Nikola Tesla. “I never thought I’d hear Edison called a troll before Congress,” Issa said, chuckling in response. He also got a good laugh to hear Mossoff later cite his own study of 1,700 patent applications that received patents in Europe and China but not in the U.S. Continued Prof. Mossoff: “The decision in TC Heartland is very concerning given the erosion of patent rights” in the United States, noting the recent IP index released by the U.S. Chamber of Commerce which ranked the U.S. patent system as the 10th-strongest system in the world, tied with Hungary. “Adding TC Heartland to this mix further contributes to this deeply disturbing decline of what was once a gold standard patent system,” Mossoff said. “The advocates for more restrictive venue do not acknowledge the resulting costs to inventors, startups, small businesses, universities… But like the economic law of supply and demand, refusing to acknowledge the costs neither negates them nor makes them go away as a policy concern.” Of course NAPP members have a vested interest in their clients seeking patents, but the increased erosion of patent rights, indeed the erosion of patentable subject matter and what constitutes infringement, should be a concern for all, not only those interested in strong patents rights. The turn toward trade secrets and secrets in general obviously leads to less disclosure of innovation, less designing around of valid patents, and ultimately less competition. It seems to me that if the real issue those proponents of the “patent troll” dialogue want is more competition, they should be on the side of reasonable scope patents and licensing, not secrets. E.D. TX: Perception v. Reality In the above-mentioned discussion of the TC Heartland case, there was a lot of discussion of the Federal District Court for the Eastern District of Texas (EDTX) being “patent friendly” and “patentee friendly”. There is also the perception that all cases are heard in the small East Texas town of Marshall. Reality check: the E.D. TX hears patent cases in Sherman, Plano, Texarkana, and Beaumont, Texas, as well as Marshall. These are not small towns. See for example: http://www.planotexas.org/133/Leading-Employers I also researched (shout out to JurisNotes) reported EDTX cases having the words “patent” and “invalid” since the Alice decision. There have been 15 reported EDTX case decisions with opinions; of these, 12 had validity determinations; of these, 7 held the patent claims invalid or ineligible. So at least since Alice, my research indicates that defendants, not plaintiffs, have about 60% chance of success on validity and eligibility. Those practicing in the software patent arts may be interested in the Motio v BSP Software (E.D.TX. 2016) opinion. Again, thanks to JurisNotes, the asserted claim 1 of US Patent 8,285,678 was directed to the abstract idea of maintaining versions of electronic documents. However, it was the provision of an "automated agent" to solve the problem of a business intelligence system lacking native version control that amounted to significantly more than a patent on the idea of maintaining versions of electronic documents. Claim 1. In a general purpose computer, a method for providing automatic version control to a business intelligence system, comprising: The automated agent consisted of software that interfaced with the business intelligence system. The claims of the patent described an invention that served as an addition to a business intelligence system, rather than claiming a monopoly on all version control systems. The invention did not simply use a computer to automate what was done previously, but instead improved upon what was previously done with computers, solving a computer specific problem (citing the DDR Holdings opinion for support). Moreover, the patent did not claim version control generally, but rather a specific method, using an automated agent distinct from a business intelligence system to improve the functionality of that system. Therefore, the claims described a particular method of providing one type of version control that did not preempt every application of the idea in a business intelligence system. This meaningfully limited the abstract idea of maintaining versions of electronic documents. At the very least, the patent disclosed a solution for the problem of providing version control to a business intelligence system that did not provide native version control. STRONGER Patents Act of 2017 My initial reading of the STRONGER Patents Act of 2017:
Thank You! I will be stepping down as NAPP President after the AMC. As outgoing president, I just wanted to say thanks to my fellow officers and board members, our Executive Director John Meidl and his predecessor Suzanne Morris, and Ralph Bizzarro at Capital Hill Management, and all devoted volunteers of the organization for their hard work the last two years. NAPP literally exists through the work of volunteers, the committees, and the board. I will remain on the board and look forward to working with the next president and board. Respectfully,
EVENT CALENDAR - July 2017
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